TradeMark Registration in Europe (EUTMs)
The European Union Trade mark (EUTM) system confers a single Registration with uniform and simultaneous protection throughout the entire European Union as a whole (exclusive rights cover 28 member states), that means you cannot limit the geographic scope of protection to a few Member States and exclude the rest. It is the most cost-effective alternative to national trade mark filings in individual countries of the EU, making the EU Trademark the best choice for many businesses who are trading abroad, or plan to expand their company into the European market.
The EU trademark registration procedure is ruled by the European Union Intellectual Property Office (EUIPO), located in Alicante, Spain.
Key reforms to the Community Trade Mark Regulation and the OHIM after 23 March 2016. The Regulation No. 2015/2424 amending the Community trade mark regulation (CTMR) entered into force on March 23, 2016 and changed the Office for Harmonization in the Internal Market (OHIM) which became the European Union Intellectual Property Office (EUIPO), and the Community trade mark (CTM) was renamed the European Union trade mark (EUTM). There are several changes to consider, namely:
Changes to Fees. There is an overall decrease in the fees for new applications and the renewal of existing registrations. – Application Fees. The official fee will no longer cover up to three classes. The basic application fee will now include a single class which is now cheaper, applying for a second class is the same as the old official fee and only if a third or more classes are included will increase the official fees but not significantly with respect to the old additional fee. – Renewal Fees. Renewal fees have been reduced significantly and affecting particularly those EUTMs covering multiple classes. – Other Fees. Those for oppositions, appeals and cancellation actions have been reduced slightly.
Registration of New Types of Marks. It is easier to register unusual or non-traditional marks and their identifying features, such as holograms, motion marks, digital icons or sound files, since EUTMs no longer have to be represented graphically as long as their protection matter are clear, precise, easily accessible and objective.
Identification of Goods and Services – Nice Class Headings. According to the judgment in the 2012 IP TRANSLATOR case C-307/10, all EU Trade marks including class headings will only protect the literal meaning of the goods and services specified in the heading and will no longer cover all goods in that class. Therefore, some marks that specify the class heading should be checked to ensure that those key commercial goods and services are clearly and precisely specified or seek further protection to cover all goods and services of interest. For this purpose, the Office will provide a six-month transitional period from March 23, 2016 ( up to September 23, 2016) for those marks filed before June 22, 2012 to apply for a declaration under Article 28 to revise the scope of the specification of a class heading in order to identify those extra terms beyond the literal meaning of the class heading not specifically mentioned in the old trade mark application, by choosing them from a fixed list of terms as specified by the Nice classification in force at the filing date.
Renewal Date. From now on, the 10-year renewal expiry date will have to be calculated from the anniversary of the EUTM’s filing date and should be renewed within the six-month period prior to said due date. Therefore, this period will no longer be extended until the end of the month of its anniversary.
Preventing Counterfeiting Goods in Transit. Holders of EUTMs and national trademarks in the EU will be able to take action and prevent third parties from bringing counterfeit goods in transit through the European Union by the seizure of those goods, even if this infringement takes place outside of the EU and the goods are not sold in a EU member state.
Own Name Defense. The own name defense is now only available for natural persons but no longer possiblefor companies as a defense to infringement claims on the ground that the use of a trade mark is the same as its corporate name.
Other Reforms. Many other relevant changes have been introduced in the Regulation, such as for the registration of certification marks, designations of origin or geographical indications which now can serve as a basis for opposition, the proof of use period in oppositions and cancellations, the opposition period for International Registrations designating the EU, the establishment of a mediation center by EUIPO with the aim of arriving at a friendly settlement of disputes, just to name a few.
E.U. Countries. The European member states protected simultaneously by the European Union trade mark system are:
(CZ) Czech Republic
(GB) United Kingdom
What Can Be Registered? Any sign can be registered as long as its protection matter is clear, precise, easily accessible and objective, in particular words, including personal names, designs, letters, numerals, the shape of goods, their packaging, slogans, sounds, solely or combined, among others. Besides the protection of individual marks, the EUIPO allows registration of collective and certification trade marks, when certain requirements are met.
Who May Apply? All natural persons and legal entities, regardless of their citizenship or residence.
Mandatory Use. A EUTM shall be put to genuine use in at least one part of the European Union (only in a single EU member state or in a part thereof of the EU) within the initial five-year period following registration. The best defense against revocation action on the grounds of lack of use is to use the EUTM genuinely and continuously. You can lose it if you do not use it.
Validity. Exclusive rights are conferred for ten years and can be renewed indefinitely for subsequent periods of ten years. All rights in a EUTM Registration date back to the filing date and not when the mark is granted.
Courts For Trademark Infringement. Legal actions involving trademark infringement or unfair competition in Spain are to be taken before the competent Commercial Court located in the city of the Higher Court of Justice within the autonomous community where the defendant is domiciled, or alternatively where the infringement has taken place or had effect. When the claimant is invoking a EUTM, this is to be held by the Commercial Court of Alicante, Spain. Appeals lodged against decisions made by the Commercial Court of Alicante are revised by the Provincial Court of Appeal of Alicante.
Main Points and Advantages of EUTMs
Unitary System. A single registration would cover all countries of the EU, and automatically extending its protection to new member states joining the EU in the future.
Multi-Class Application. A EUTM application allows multi-class designation under the Nice International Classification of goods and services (45 classes), where class headings may be specified.
Languages. EUIPO’s five procedural languages are English, Spanish, French, German and Italian. A EUTM may be filed in any one of the twenty official EU languages. However, designating a 2nd language of the 5 above is needed (we usually choose EN and ES), to be used as a possible language of opposition, revocation or invalidity proceedings at this Office.
Priority and Seniority Claim. The applicant of a EUTM may claim either priority within 6 months of a former national trademark application or registration worldwide and/or seniority of national trade marks in any EU member states, provided that these have exactly the same classes of goods and services, word elements or device being claimed in the EUTMa. Proceeding this way, in the future you would not need to renew those individual national marks in the EU, but just a single EUTM and thus obtaining significant renewal cost savings.
Oppositions. – Opposition procedure based on earlier EUTM or national trade mark rights. As the EUTM system runs parallel to the national legislation of each EU member state, the filing of a EUTM does involve some risk, provided that an earlier conflicting national or regional trade mark can oppose against the entire EUTMa. If that opposition is successful, the applicant then would lose the protection, who can convert it into individual national applications retaining the same date of filing, of priority or seniority of the EUTM application. It is an all or nothing system.
Risks. However, there is some risk involved to bear in mind: if in a worst case scenario, your EUTM application is rejected because of an opposition that could be based on an earlier national trade mark, IR or a EUTM, the rejection, whether entirely or partially for some goods/services, would also take effect in the whole EU. The losing party must bear the costs of the proceedings (minimum rate fixed of €320.00).
Changes in the Register. EUIPO centralizes the recordal of assignments, licenses, changes of name, and changes of address.
How Abecsa Can Help You. The value-added services we provide for EU trade marks can be summarized as follows:
Plan your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to achieve the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Free Availability Search. We will conduct a free basic search in all European Registers and EUIPO or we can an in-depth comprehensive search in this territory to help you finding a legally available trade mark for your new product or business before we apply for a EUTM and using a new product or business name by checking any earlier trademarks that could conflict with yoursby finding if they are identical or confusingly similar. Our trademark search service can save you time, and a fortune in wasted design and incurred advertising costs, efforts as well as evade your potential legal liability in using by mistake a very similar name to someone else’s registered trademark, advising on risks to use a given sign in terms of infringement.
Filing. We would file the European Union trade mark application on your behalf, if it is available; foreseeing the relevant aspects and the correct manner it should be applied for: classes of goods and/or services, design, colours, etc. We offer fixed fees for filings as well as for trademark prosecution in this regional Office of our jurisdiction so you can foresee the estimated costs for your protection in Europe.
Prosecution. We will monitor your EUTMa until it is finally registered and duly inform you of every official notice we receive from EUIPO, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices.
Defense. – Office Actions. If your trademark is objected by the European Office (EUIPO) based on formal requirements or if it is opposed by a third party, we shall study the cited grounds for refusal or the relevance and differences of the earlier right on which the opposition has been based and file the Office action response in defense of your rights within the given time limit, by designing the adequate strategy so we likely ensure success and obtain the desired registration of your mark, and hence a solid enforceable trademark protection. Assistance is also provided if you want to oppose a conflicting application, by preparing the needed observations in support and filing the formal notice. We may require you to provide us relevant details or proof in support of our comments, facts or evidences to be alleged in the exchange of observations during the opposition or appeal proceedings, or within a requested cancellation action procedure (Invalidity or Revocation). – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in trademark rights infringement proceedings with the Spanish and European Courts.
Watching Services. We can provide our clients with a watch service, keeping an eye on what third parties are attempting to register. If we find a new published application that can be potentially conflicting with your prior rights, then we will send you an alert proposing you to oppose within the statutory deadline.
Other Actions. We can handle any associated matter on EUTMs such us the recordal of licenses, change of names and ownership transfers.
Representation Before the EUIPO. We would be glad to be your agent! You can enquire us about our representation and associated services. Note that where the EUTM application is opposed or objected, the applicant may be requested to appoint a registered European representative to validly respond to the provisional refusal; if he is not domiciled, has no real, effective industrial or commercial establishment in the European Union.
European Union Trade Mark Procedure and Time Scale. The entire process can take up to six months for European EUTM filings until registration, for straightforward cases. If official objections arise or third parties opposes to the application, this may take longer considering the allowed exchange of observations of the applicant and the opponent until the Office renders a decision.The EUTMa may be used in Europe prior to registration.
- Filing of the EUTM Application. The application must be filed including the ownership identification of the proprietor, a graphical representation of the sign or wording in standard characters as well as the Nice classes and list of goods or services covered by the EUTMa. The filing date of a EUTMa will confer the applicant with a provisional right for this distinctive sign while it is being examined and follows the mandatory procedure.
- Formalities Check. Once a European Union Trademark application is filed, it will be examined as to formalities as to the classification, wording of the sign and possible objections to the distinctiveness of the mark can be cited by the examiner. In such case, the EUIPO will notify the applicant of the absence of formal requirements, who will commonly have two months for remedying the cited objection or for filing his own observations in reply.
- Search and Notification of Earlier Rights. If the newly filed EUTMa is similar or identical to an existing European Union trademark, the Office would just notify the holder of the earlier right of its next publication, having up to three months of the date of publication to oppose the trademark if the holder so wishes. If no owner of a prior European Union or National Trademark formally files an opposition, the trademark will proceed to registration in all the EU states. A EUTM application will never be refused by the EUIPO because of any earlier trademark, but conducts a trademark search and the result is sent to the applicant. This search will be conducted and based just on filed or registered EUTMs, but will never notify the owner of national earlier rights registered with the different National Offices in Europe, even if these jurisdictions are parallel and likely may conflict with the EU Register.
- Publication and Opposition Period. If an opposition notice is formally filed within the three month deadline after its publication, the proceedings can last for almost two years, where an exchange of observations between the opponent and applicant would take place. Both the opposition and observations in reply require to be reasonably argued and in some cases the use of the opponent mark must be sufficiently proven. The resulting decision can turn into a limitation of the goods or services in the applied for European Union trademark or into a partial or total rejection of the EUTM application.
- Registration. If no earlier EU or National Trademark formally files an opposition and no other official objections arise or, if by the decision of EUIPO these are found successfully defended and overcome or remedied, the trademark will proceed to registration in the entire EU states for ten years from application date. Registration is published in the EUTMs Bulletin and the Office will issue the certificate of registrationin PDF only.This grant decision can be appealed, commonly within two months from the notice of registration.
- Refusal. The European Union Trademark application can be refused entirely or in part based on a prior National or EU trade mark has successfully opposed or it has been objected by EUIPO. This decision is subject to appeal within the deadline given by the Office, commonly two months from the notice of the decision. – Conversion. If a European Union Trademark application is refused because of relative grounds for refusal in one or more of the EU states, the trademark application can be converted into individual national trademark applications for some or all of the remaining states of your choice by paying a conversion fee.
International Registrations Designating the European Union. IRs that designates the EU (Madrid Protocol) will have the same legal effect as a EUTM and as if it was filed directly before the EUIPO, which must follow the same process and comply with the same requirements. The International Bureau WIPO will require the EUIPO, as well as to all national Offices, that a provisional refusal based on absolute grounds or on an opposition filed by a third party, must be notified to the International Bureau by the EUIPO within the standard time limit of 12 months, and WIPO will notify the applicant of this action along with the time limit given by the Office to remedy or to file his observations in defense of the provisional refusal of the IR designating the EU. If any objection arises during the “ex officio” examination, or if an opposition is filed by other within three months from the publication of application, the EUIPO will provisionally refuse that protection of the mark in the EU, which can be contested, usually within two months from the notice of said provisional refusal.
Information and Requirements to File a EUTM Application:
- The full name and address of the applicant(s)-holder(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Full details of the trademark and if appropriate, and a good representation of the logo or design, indicating all generic colors to be described.
- Nice classes to be applied for and list of preferred goods and services sold or to be sold under the trade mark to be specifically included (45 classes of goods and services).
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
- The details of the national application(s) on which Seniority is to be claimed, if appropriate.
- Your instructions on how we should proceed and approval of the likely costs.
- Your payment by bank transfer within 20 days from application and invoice date.
- (No POA is required by this Office any longer).
Please do contact us via our contact form if you need advice or our fees on any trademark issues such as:
- Registering your brand in the European Union or an International Registration designating this Regional Office, or looking for the associated tradevmark searching and watching services.
- Seeking our Attorney’s representation and appointment in your trade mark application or registration.
- Opposing a EU trade mark applied for registration by others.
- Defending your challenged EUTM or IR designating the EU, from oppositions, appeals or cancellation actions.
- Taking legal action against infringement of your trademark right in Europe being used by another person or company without your consent.
- Renewing your EU trade mark trademark for an additional 10 year period.
- Licensing the use of your EUTM or selling it by recording the assignment of all the trademarks to others.
Confidentiality. It would be advisable that you do not disclose your trade mark protection plans to avoid others registering it before you. However, you can safely discuss them with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.